The applicant is Deutsche Post AG, in whose favour the trade mark "POST" was registered.
On 5 June 2008, the First Civil Senate of the Federal Court of Justice (BGH), which is responsible for trade mark law, had to decide on the scope of protection of the trade mark "POST" in two lawsuits. The plaintiff is Deutsche Post AG, in whose favour the trade mark "POST" is registered, inter alia, for the transport and delivery of letters and parcels. In the proceedings now decided, the plaintiff took action under this trade mark against two companies for courier and postal services which have the element "Post" in their company name and use it in the provision of their services. In the first case, the plaintiff brought an action for infringement of its trade mark against a company that trades under the name "City Post KG", has registered a word/figurative trade mark with the component "CITY POST" and uses the components "city post" as a domain name and as an email address. The Regional Court and the Higher Regional Court of Cologne had dismissed Deutsche Post's claim in the lower instance on the grounds that there was no likelihood of confusion.
Deutsche Post's second action arising from the "POST" trade mark was directed against a company called "Die Neue Post", which also uses this designation on its website. The Naumburg Higher Regional Court had prohibited the defendant from using this designation in agreement with the lower court, the Magdeburg Regional Court.
The Federal Supreme Court (BGH) upheld the decision of the Cologne Higher Regional Court dismissing the action. In contrast, the Federal Supreme Court overturned the decision of the Naumburg Higher Regional Court and dismissed the action. It left open the question whether there is a likelihood of confusion between the plaintiff's trade mark "POST" and the challenged signs "City Post" and "Die Neue Post". The Federal Court of Justice denied the plaintiff's claims under its trade mark pursuant to Section 23 No. 2 MarkenG. According to this provision, the trade mark proprietor cannot prohibit a third party from using a sign similar to the trade mark in suit as an indication with which the third party describes the goods or services offered by him, provided that such use is not contrary to morality. The companies providing postal services after the partial opening of the market have a particular interest in using the designation "Post" to describe their field of activity. As long as the competitors of Deutsche Post AG distinguish themselves from the trademark word "POST", which is used in a unique position, by means of additions and do not increase the likelihood of confusion by referring to other signs and features of Deutsche Post AG - such as the post horn sign or the colour yellow - they cannot be prohibited from using the designation "POST".
Incidentally, proceedings are still pending before the Federal Supreme Court concerning the cancellation of the trademark "POST" registered in favour of Deutsche Post. These proceedings will be heard on 23 October 2008. The designation "Post" - which is descriptive in itself and therefore cannot be registered without further ado - has been registered as a trade mark in favour of the applicant on the grounds that it has established itself as an indication of origin. In view of the fact that the Federal Court of Justice dismissed the action in the cases decided today, there was no need to wait for the outcome of these cancellation proceedings.
Judgments of the Federal Supreme Court (BGH) of 5 June 2008 - I ZR 108/05 and I ZR 169/05
Previous instances: Cologne Regional Court - Judgment of 9.9.2004 - 31 O 246/04
Cologne Higher Regional Court - Judgment of 27.5.2005 - 6 U 196/04
and
LG Magdeburg - Judgment of 20.1.2005 - 7 O 2369/04 (061) GRUR-RR 2005, 158
OLG Naumburg - Judgment of 19.8.2005 - 10 U 9/05, GRUR-RR 2006, 256
Source: Press release no. 107/2008 of the Press Office of the Federal Court of Justice of 5 June 2008, Herrenstraße 45 a, 76133 Karlsruhe, telephone 07 21 - 159-5013, fax 07 21 - 159-5501, e-mail: pressestelle@bgh.bund.de.
Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney at Law Michael Ullrich, LL.M.(Information Law)
m.ullrich@goldberg.de
